Tag Archives: patent drafting

Introduction

Among various requirements of patentability, novelty and non-obviousness/inventive step requirements are judged based on prior art. A claim of a patent application is considered to be novel if the claim is not anticipated by a prior art reference. A prior art reference may make express, implicit and inherent disclosure, which may be used for judging whether the prior art reference anticipates a claim. The article deals with nuances in using inherent disclosure made by a prior art reference to judge whether the prior art reference anticipates a claim.

Inherent disclosure

It is important to recognise what can be considered inherent disclosure to understand how prior can be applied to reject claims based on anticipation. Some of the important forms of inherent disclosure and key considerations while dealing with rejection based on inherent disclosure are listed below.

1. Inherent disclosure of a function by prior art

2. Inherent disclosure of a property or a characteristic by prior art

3. Inherent disclosure of a process by prior art

4. Burden of proof

5. Recognition of inherent disclosure by person of ordinary skill in the art

6. Patent on new use

1. Inherent disclosure of a function by prior art

A subject matter may have been claimed in terms of its function. A prior art reference may disclose a product, process, composition or an article of manufacture as claimed, while being silent on the claimed function. Such a reference may be considered to be inherently disclosing the claimed function if the natural result flowing from the operation as taught by the reference would result in the performance of the questioned function.

A function is not inherently disclosed by prior art reference if the questioned function may result from optimization of conditions, and not necessarily by what is disclosed by the prior art reference.

As an example, reference is made to the decision laid down in Schering Corp. v. Geneva Pharms. Schering was granted two patents, viz. US4282233 (earlier) and US4659716 (later). US4282233 relates to antihistamine loratadine, an active ingredient of the pharmaceutical drug CLARITIN (Brand name). US4659716 on the other hand relates to a metabolite of loratadine called descarboethoxyloratadine (DCL).

The patent at issue was US4659716. The prior art reference, US4282233, did not expressly disclose DCL or refer to metabolites of loratadine. However, it is a well known fact that the inevitable consequence of administering loratadine is formation of DCL. Hence, some of the claims of US4659716, which covered formation of DCL within the human body, were held to be anticipated by US4282233.

2. Inherent disclosure of a property or a characteristic by prior art

A claim might recite a property or a characteristic along other limitations. A prior art reference might teach a product or a composition, which is claimed, while not expressly disclosing the property. In such circumstances, the prior art reference may be considered to be inherently disclosing the property. The logic for arriving at such conclusion is that, product/chemical composition and its properties are not separable; hence, if a claimed product and the product taught by the prior art reference are identical, then they must have the same properties, and therefore the prior art reference inherently discloses the property.

As an example, reference is made to the decision laid down in Titanium Metals Corp.v. Banner. In this case, the difference between the claim of a patent application in question and the prior art reference (Russian article) was that the claim recited a property, viz, “good corrosion resistance”, of an alloy, and said property was not expressly disclosed by the prior art reference, but the alloy was disclosed. The court decided against grant of patent even though the property included in the claim was not expressly disclosed by the prior art reference.

From the above case law, it can be concluded that claiming a product which discloses a new property of the prior art product does not constitute the claim novel. The range of titanium, nickel, and molybdenum in the prior art fall within the range disclosed by “The Titanium Metals Corp”. Therefore, it may be construed that the properties of the alloy claimed by “The Titanium Metals Corp” may be inherently present in the alloy disclosed in the Russian article. If the composition of the product in the prior art is similar to the claimed product, it is therefore obvious that the properties of the products will be same.

3. Inherent disclosure of a process by prior art

A claim might recite process steps, which might have not been expressly disclosed by a prior art reference. However, the prior art reference might have disclosed a device/system, which in its normal and usual operation performs the claimed process steps. In such circumstances, the prior art reference may be considered to be inherently disclosing the claimed process steps.

As an example, In re William J. KING, claims of a patent application were directed to a method of enhancing colour effects produced by ambient light. The corresponding specification disclosed an article of manufacture to carry out the claimed method. The article of manufacture disclosed in the patent application was also taught by a prior art reference (Donley patent), while being silent on some on the process steps of the claim. However, it was held that the prior art reference inherently discloses and anticipates the process steps since the article of manufacture taught by the prior art reference performs the claimed process steps its normal and usual operation.

4. Burden of proof

A patent examiner using a prior art reference to allege that a limitation of a claim is inherently present in the prior art reference has an initial burden to explain as to why the limitation is inherent in the prior art reference. “The examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”

Once the examiner presents reasoning (not necessarily absolute proof; prima facie case suffices) tending to show inherency, the burden shifts to the patent applicant to show that the subject matter of the prior art reference does not inherently disclose/possess the limitation of the claim under contention.

5. Recognition of inherent disclosure by person of ordinary skill in the art

A person of ordinary skill in the art need not have recognised the inherent feature of the prior art reference at the time of the invention in order to assert that the prior art reference anticipates a limitation of a claim. Hence, the fact that the limitation of the claim is inherently present in the prior art reference is sufficient to allege that claimed limitation is inherently disclosed in the prior art reference.

6. Patent on new use

Mere recitation of a newly discovered property of a compound/property/system/process in a claim may be anticipated by a prior reference that inherently discloses the newly discovered property. However, a claim directed to a new use for an old compound / property / system / process based on unknown properties (now discovered) of the old compound / property / system / process might be patentable. It is important that “a new use” does not mean newly recognized result or outcome of a prior art.

As an example, a prior art might disclose an alloy, and the prior art might be silent on the corrosion resistance of the alloy. In case the corrosion resistance of the alloy is later discovered, and a patent application is filed by merely reciting that the alloy is corrosion resistant (newly recognized result or outcome of the prior art), then the claim might be anticipated by prior art. On the other hand, in light of the newly discovered property of corrosion resistance of the alloy, if a new use, such as a process of using the alloy in a high corrosive environment (new use) is claimed, then the claim might not be anticipated by the prior art reference.

Conclusion

Prosecuting patent applications requires thorough understanding of the grounds that can be used by patent examiners for rejecting claims and recourse patent applicants can take to deal with such rejections. Understanding requirements of rejection based on inherency can go a long way in deciding claim drafting strategy and can also be used for challenging validity of asserted claims during litigation.

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Priority date is imperative to claims of a patent application because knowledge or information available in the public domain before the priority date is taken into consideration while determining whether the claim(s) are entitled to be granted or rejected. Delay in securing the priority date may lead to addition of more information or knowledge to the public domain, which may adversely affect possibility of a patent grant. The approach applied by the patent office in India to assign priority date to claims is discussed in this article.

Determining priority date

A complete patent application may include one or more claims, and each and every claim of the patent application is assigned a priority date. In other words, different claims in a patent application can have different priority date.

In case a complete patent application is claiming priority from a previously filed provisional patent application, and if a claim of the complete patent application based on the subject matter disclosed in the provisional patent application, then the priority date of the claim will be the filing date of the provisional patent application.

The law in India allows an application filed as a complete patent application to be considered as a provisional patent application, if a request is made within 12 months of filing the above referred complete patent application. A subsequent complete patent application that is filed by claiming priority from such a provisional patent application can have a claim based on the subject matter disclosed in above referred provisional patent application. In such as scenario the claim’s priority date will be the filing date of the provisional patent application (which was filed as a complete patent application earlier).

A complete patent application may be filed by claiming priority from two or more provisional applications. In case a claim in such a complete patent application is based on the subject matter disclosed in one of those provisional patent applications, then the priority date of the claim will be the filing date of the provisional patent application in which the subject matter is disclosed.

On the other hand, if a claim in such a complete patent application is based on the subject matter disclosed in parts in multiple provisional patent applications, then the priority date of the claim will be the filing date of the provisional patent application that was last filed.

A complete patent application may be filed within 12 months of a previously filed application in India, and claim priority from the same. In case a claim in such a complete patent application is based on the subject matter of the previously filed application, then the priority date of the claim will be the filing date of the previously filed application.

A claim in a divisional patent application will have its priority date as the filing date of an earlier application (provisional(s) or complete from which the divisional application originated) in which the subject matter on which the claim is based on is first disclosed.

A complete patent application filed in India may claim priority from one or more applications filed in a convention country. A claim in such a complete patent application will have the priority date as the filing date of the application in the convention country in which the subject matter on which the claim is based on was first disclosed.

Conclusion

Priority date of a claim has a bearing on what can be considered as prior art to a claim in a patent application. The points discussed above provide an overview of how priority date is determined in different scenarios. Hence, claims should be drafted in such a way that an earliest priority date is established, while also considering the scope of protection desired, especially when a complete patent application claims priority from multiple patent applications.

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Most often software in computer systems is located within a user device (client) and a remote computing resource (server). The client can be at one location, connected over a network (e.g., the internet) to the server. A user accesses the internet with a device to request or upload data to the server over the network. The server processes the request, or stores the data and delivers the result over the network.

Software related inventions as a whole can be operated across territorial borders. Thus, the question arises whether the software patent can be enforced, since it is known that patents rights are territorial in nature.

Consider a patented software invention in the United States covering a “product recommendation” method and system. A competitor enables users in the United States to download an application onto a mobile device. The user accesses the application to browse through products. The activity of the user is sent to a server located in India. The server processes the information in India and provides product recommendations. The product recommendations would then be available to the user on his device in the United States.

Patent Infringement Liability:

Continuing from the above example, an owner of such a software patent would be in a dilemma as to whether the competitor is liable for infringement of his patent, given the fact that, his patent only covers United States, and the competitor is carrying out part of the invention outside United States.

Such scenarios have come before courts in US and UK, and the decisions are encouraging for software patent owners. We will be discussing a case between NTP Inc. and Research In Motion Ltd, in US, and another case between Menashe Business Mercantile Ltd. & Anor and William Hill Organization Ltd, in UK. In both the cases, even though the competitors argued that part of their systems was outside the jurisdiction of the patents, the competitors were held liable for infringement.

Case 1: NTP Inc. v Research In Motion Ltd

In November 2001, Research in Motion(RIM) was sued by NTP Inc. RIM is the manufacturer of the BlackBerry device, NTP sued RIM for infringement of five US patents, which NTP alleged covered the BlackBerry system.

The five patents of the NTP were covering the components and process necessary for integrating an email service and wireless network.

BlackBerry enabled its users, through its devices, to not only make conventional telephone calls, but also to have email access through the BlackBerry "push technology”. The BlackBerry email system intercepts a message to an email user and then routes the message to a relay component that in turn routes the message to a network. The BlackBerry "Relay" component, which was equivalent to one of the claim limitations in NTP patents, was located in Canada.

In the District court, the jury found RIM infringing on all the claimed elements, except for RIM's relay component, which was located in Canada, all the other elements of NTP's claims was present within the United States. However, the jury found that the operation of the BlackBerry was accomplished according to method claim described in NTP's patent and awarded monetary damages and entered a permanent injunction enjoining RIM from further manufacture, use, importation and sale of accused BlackBerry devices.

RIM appealed to the Federal Circuit, challenging the District Court’s claim interpretation, as well as disputing the applicability of § 271(a) to its extraterritorial operations, based on the point that the relay component of the BlackBerry system was located in Canada. The Federal circuit considered this argument, but reasoned that

"even though one of the accused components in RIM’s BlackBerry system may not be physically located in the United States, it is beyond dispute that the location of the beneficial use and function of the whole operable system assembly is the United States".

The Federal circuit concluded that:

“the location of RIM’s customers and their purchase of the BlackBerry devices establishing control and beneficial use of the BlackBerry devices within the United States satisfactorily establish territoriality under section 271(a).”

In October 2001, William Hill was sued by Menashe in UK. The patent granted to Menashe is "Interactive, computerized gaming system with remote control".

William hill enabled users in UK to install software program on their computers. This allowed the users to access a server which was part of William Hill’s on-line gaming system. However, the servers were located in Antigua. Menashe sued William hill for a contributory infringement.

William accepted that the CD containing the software program was an essential element of the invention, but disputed that the patent was not put into effect in UK, since the server was located in Antigua. William took the above line of argument as defense.

However, the decision was in favor of Menashe. The judge affirmed that:

“The claimed invention requires there to be a host computer. In the age that we live in, it does not matter where the host computer is situated. It could be in the United Kingdom, on a satellite, or even on the border between two countries. Its location is not important to the user of the invention nor to the claimed gaming system. In that respect, there is a real difference between the claimed gaming system and an ordinary machine. For my part I believe that it would be wrong to apply the old ideas of location to inventions of the type under consideration in this case. A person who is situated in the United Kingdom who obtains in the United Kingdom a CD and then uses his terminal to address a host computer is not bothered where the host computer is located. It is of no relevance to him, the user, nor the patentee as to whether or not it is situated in the United Kingdom.”

The Judge’s view was:

“it would be wrong to apply the old ideas of location to inventions of the type under consideration in this case.” Instead, it is pertinent to ask who uses the claimed gaming system. The answer must be the punter. Where does he use it? There can be no doubt that he uses his terminal in the United Kingdom and it is not a misuse of language to say that he uses the host computer in the United Kingdom. It is the input to and output of the host computer that is important to the punter and in a real sense the punter uses the host computer in the United Kingdom even though it is situated in Antigua and operates in Antigua. In those circumstances it is not straining the word "use" to conclude that the United Kingdom punter will use the claimed gaming system in the United Kingdom, even if the host computer is situated in, say, Antigua. Thus the supply of the CD in the United Kingdom to the United Kingdom punter will be intended to put the invention into effect in the United Kingdom”.

Conclusion:

From both the cases, we can conclude that, patent rights may be enforced even though one of the elements in the claimed system or method is located outside the territory of the patent, provided that the beneficial use of the system occurs within the territory of the patent granted.

In this new age of complex patent enforcement scenarios, to strengthen the patent rights of an invention relating to cloud computing, a careful strategy should be adopted for drafting and filling patent applications.

According to the section 3 (k) of the Indian Patent Act, mathematical and business methods, computer programmes per se or algorithms are categorized as non patentable subject matter.

Why are mathematical methods not patentable?

The Manual of Patent Office Practice and Procedure provides reason as to why mathematical or business methods are not considered patentable.

With reference to section 3 (k), the manual says, and I quote:

“Mathematical methods’ are considered to be acts of mental skill. A method of calculation, formulation of equations, finding square roots, cube roots and all other methods directly involving mathematical methods are therefore not patentable. With the development in computer technology, mathematical methods are used for writing algorithms and computer programs for different applications and the claimed invention is sometimes camouflaged as one relating to the technological development rather than the mathematical method itself. These methods, claimed in any form, are considered to be not patentable.”

The interpretation of this section has generated several debates and arguments over the years. This section can be analyzed in support of a case, which may provide a better interpretation of section 3 (k) and especially inventions dealing with mathematical methods.

Electronic Navigation Research Institute vs. Controller General of Patents

On July 5th, 2013, the Intellectual Property Appellate Board (IPAB) passed a decision denying a patent to Electronic Navigation Research Institute for their invention that relates to a method for calculating Chaos Theoretical Exponent value (CTEV). The Deputy Controller in his decision had denied a patent to the applicant on the grounds of non patentable subject matter under Section 3 (k) of The Patent Act.

In light of this case, the controller and IPAB’s considerations, while deciding denial of patents for inventions that fall under section 3 (k), especially mathematical methods, are analyzed.

The Deputy Controller held that the above invention was based on a mathematical method for solving mathematical equations and declined to accept the technical effect theory, as he was of the opinion that Indian Patent Act does not allow patents for mathematical methods, which have technical advancements. Hence the invention was rejected as non patentable under Section 3(k) of the Indian Patent Act.

The Appellant’s invention relates to a system for analyzing a time series signal by a method based on Chaos Theory and calculating a chaos theoretical exponent value (CTEV). The conventional chaos theoretical exponent value calculation systems presumed that it analyses a system of stable dynamic. Thus the temporarily changing dynamics cannot be calculated as a significant value. The inventors claim to have invented a system which makes it possible to calculate a CTEV that could not have been so far processed in a system of temporarily changing dynamics and to perform the process thereof at a high speed and on a real time basis, and to calculate a CTEV even from a time series signal which includes noises. The complete specifications also describes that the invention calculates the average CTEV in a shorter time of two decimal orders or more.

Controller’s Decision

The Patent Office issued the First Examination Report (FER) on 11th June 2007 with the objections that the claims fall within the scope of the clause (k) of Section 3 and Section 2(1) (j) of the Indian Patent Act, 1970 as it lacks novelty and inventive step. A response to the first examination report (FER) was filed by the applicant on 9th April 2008. A hearing was also requested by the applicants along with the submissions. After considering the submissions made by the Applicant, as well as descriptions and claims as on the records, the Deputy Controller was of the opinion that the alleged invention still falls under Section 3(k) of the Patents Act. Hence a grant of patent to the above application was rejected.

Appellant’s allegations against the controller’s decisions

The Appellant (who are the applicants) then filed an appeal against the Controller’s decision before the IPAB, and one of the grounds was that the Controller had wrongly negated the ‘technical effect” holding incorrectly that the Indian Patent Law does not follow the EPC.

IPAB’s decision to the above allegation

In response to the Appellant’s allegation, the IPAB referred to a previous case Yahoo vs. Rediff, which was raised on the same grounds. The IPAB cited that “inventive step must be a feature which lies with a patentable subject matter. Otherwise, the patentee by citing economic significance or technical advance in relation to any of the excluded subjects can insist upon grant of patent thereto. Therefore, this technical advance comparison should be done with the subject matter of invention and it should be found it is not related to any of the excluded subjects…….”

The IPAB here declined the allegation by the Appellants by stating that the Controller was of the opinion that the claimed invention, although it was a technical advancement, it still was nothing more than a mathematical method based on various algorithms for which the Indian patent law does not grant a patent. The identifiable technical contribution provided by the claimed invention itself came under the excluded subject matter and so the IPAB justified the controller’s decision that a patent cannot be granted for a mathematical method according to the patent law in India and the appeal was dismissed.

Conclusion

In light of the above discussion, one of the ways of analyzing patentability of inventions that involve mathematical methods is by adopting a “problem and solution” approach of analysis. One may try to define the technical problem the invention is trying to solve, and thereafter identify the technical solution that addresses that problem. Further, one can try to determine whether that technical solution itself is the “mathematical method” or is it beyond the “mathematical method”. Inventions that propose and claim a technical solution that is beyond a “mathematical method” have a higher probability of having a patent granted.

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At the time of filing a patent application in India, the applicant must submit an undertaking stating that, he would keep the Controller updated from time to time about patent applications filed outside India relating to the same or substantially the same invention as filed in India. Such updates shall be provided till the patent is granted in India. The objective of seeking such information from the applicant is to assist the Indian Patent Office in examining the Indian patent application.

History:

Section 8 of the Indian Patent Act, which relates to statement and undertaking was introduced subsequent to Justice N. RAJAGOPALA AYYANGAR report titled “REPORT ON THE REVISION OF PATENT LAW”. The suggestion provided in the report is provided below:

“It would be of advantage therefore if the applicant is required to state whether he has made any application for a patent for the same or substantially the same invention as in India in any foreign country or countries, the objections, if any, raised by the Patent offices of such countries on the ground of novelty or un patentability or otherwise and the amendments directed to be made or actually made to the specification or claims in the foreign country or countries.”

Governing statute

Section 8(1) and 8(2) of the Indian Patent Act are particularly relevant, and are reproduced below:

8. Information and undertaking regarding foreign applications. – (1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period as the Controller may allow—

(a) a statement setting out detailed particulars of such application; and

(b) an undertaking that, up to the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.

(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.

Interpretation of the governing statute

As per Sec 8(1), an applicant of an Indian patent application shall provided detailed particulars about patent applications filed outside India (foreign applications) for the same or substantially same invention. It shall be noted that such detailed particulars will have to be submitted as long as those foreign applications are filed by the instant applicant, or by any person deriving title from him or by any person through whom he derives title. The disclosure under Sec 8(1) is a mandatory voluntary disclosure.

On the other hand,Sec 8 (2) of Indian patent Act empowers the Controller to seek detailed particulars corresponding to the foreign applications at any time during the prosecution of the Indian patent application.

Time limit to file statement and undertaking:

The applicant should file the statement and undertaking within 6 months of filing the Indian patent application.

Further, in a scenario wherein foreign applications are filed subsequent to filing of the statement and undertaking then detailed particulars of such applications shall be filed within 6 months of such filing.

Furthermore, detailed particulars sought under Sec 8(2) shall be furnished to the Controller within 6 months from the date of such communication from the Controller.

Detailed particulars to be furnished:

The Act refers to furnishing of “detailed particulars”, however, falls short of mentioning what details fall within the purview of “detailed particulars”.

In our opinion, “detailed particulars” relate to details corresponding to filing of patent application, grant of patent, issuance of examination report, response to examination report, amendment of specification and objections to grant of patent, among others. Hence, when such events occur with respect to foreign applications, detailed particulars corresponding to such events should be furnished within 6 months from the date of occurrence of such an event.

Consequences of violating Section 8:

Violation of Sec 8 has far reaching consequences. Violation of Sec 8 can be a ground for pre-grant and post-grant opposition under 25(1)(h) and 25(2)(h), respectively. Further, violation of Sec 8 can be a ground for revocation under Sec 64(1)(m). The relevant sections are reproduced below:

25. Opposition to the patent

(1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground—

(h) that the applicant has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge;

(2) At any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds, namely:—

(h) that the patentee has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge;

64. Revocation of patents

(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say—

(m) that the applicant for the patent has failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to his knowledge;

Hindustan Unilever limited (HUL) had filed for a patent in India for an invention relating to “filter cartridge for use in gravity flow filtration”. Subsequently,HUL was granted a patent (IN 195937) on August 26, 2005. On 2008, it had launched water purifier named "pureit" in the Indian market. Tata Chemicals Ltd. came up with a water purifier named SWACH in the following year, against which HUL had filed a suit for infringement. Tata Chemicals Ltd. objected the validity of the patent IN 195937 on various grounds, section 8 being one among others.

The IPAB revoked HUL’s patent on the basis that HUL violated Section 8 of the Indian Patent Act. Relevant excerpts from the IPAB’s order is reproduced below:

73. Next we take up the ground of revocation on the ground of non compliance of the provisions of Section 8. The present application which is the Patent Application No.709/MUM/2002 was filed on 7.8.2002. Form-3 was filed on the same day. In this, there was no information regarding foreign filing. The respondent had filed an application in Great Britain as a domestic application. This was on 28.03.2003 then they filed the PCT Application on 21.07.2003. On 25.07.2003, the details of the Great Britain filing were submitted but nothing else. On 04.08.2003, the respondent was filed an application in Thailand. The International Search Report dated 31.10.2003. The First Examination Report issued by Respondent 2 was on 05.12.2003. On 08.12.2003, the Great Britain application had been terminated. On 29.01.2004, the respondent filed further particulars of corresponding foreign filings. The details of Thailand and PCT application were submitted that the Great Britain Application No.0307146 was shows as pending. Filing of application in Japan is on 21.07.2003. The International Search Report was not submitted. On 01.04.2004, in the response to the first examination report, the respondent stated that no search report was available. The second examination report was communicated on 07.07.2004. The International Preliminary Examination Report (IPER) was available on 27.07.2004. In response to the second examination report on 19.11.2004, the International Preliminary Examination Report was not submitted, though the Patent Office had requested for the same. The respondent had assured the Patent Office that as soon as available, it would be submitted. The International. Preliminary Examination Report was also not submitted. The Great Britain application was still shown as pending. No other filing details were provided.

74. 05.12.2004 was the last date for placing the application in order. The counsel for the respondent sent a letter on 05.04.2005 to Indian Patent Office. Even then the ISR and IPER were not submitted, the status of the Great Britain application was not updated. The patent was granted on 26.08.2005. Withdrawal of Japan application was dated 07.07.2006.

106. The respondent cannot be heard to say that since European Patent No.1106578, the prior art was anyway considered by the Controller and no prejudice was caused by not disclosing the ISR or IPER. It is not enough that the Examiner knew that this prior art was there, the respondent ought to have disclosed the results of the IPER. The IPER rejected the claims 1 to 3 on both the grounds of novelty and inventive step. It is not for us to conjecture what effect this might have had on the examiner here if he had the benefit of the IPER. This is the object and purpose of enacting Section 8. The Report says that this information would be of great use for a proper examination of the application. It is no answer to say anyway the office looked at EP’578. The Patent Office did not see the IPER. The learned counsel for the respondent submitted that this lapse is of a de-minimis nature, we do not think that honestly furnishing the information or particulars allows a de-minimis qualification.

107. The Act requires compliance with Section 8(1) and 8(2) and the patent applicant must comply with the same. Otherwise the patent is liable to be revoked.

108. The knowledge of the prior art is not the same as the opinion of the EPO . In this case, we sustain the objection raised by the applicant regarding Section 64(1)(m). The patent is liable to be revoked on this ground also

Ajanta Pharma Ltd, a leading Indian drug maker had filed for revocation of two Allergan’s patents on Ganfort (Patent No. 212695) and Combigan (Patent No. 219504) on the grounds of "obviousness, insufficiency and non-disclosure of information under Section 8.

The IPAB passed a judgement in favour of Ajanta Pharma revoking the two patents, wherein violation of Section 8 was one of the reasons for revocation.

Relevant excerpts from the IPAB order corresponding to Patent No. 212695:

Section 8 violation

16. The learned counsel for the applicant submitted that the respondent has under a duty to disclose information as per the requirements of Section 8 of the Act and Section 8(1) of the Patent Act makes it mandatory that information, pertaining to foreign filings in respect of the same or substantially the same invention be provided. The counsel submitted that Form 3 of 20.01.2004 furnished by the respondent in IPO indicated that Korea, New Zealand, Canada, China and Japan were pending applications. However, the application numbers of the same were not disclosed. Exhibit EA 1 of the Miscellaneous Petition clearly indicates that these application numbers had been generated. The Korean application was published barely 4 days after the last Form 3 of January 20, 2004 and the New Zealand application was granted the following year i.e. in 2005. Also, it was submitted that the EP application number was published on March 3, 2004 i.e. more than 2 months after the Form 3 was filed. However Applicant did was not press.

17. The learned counsel for the applicant submitted that Section 8(2) is a requirement that is borne out of the Controller's direction in paragraph 14 of the FER dated September 21, 2004 (Exhibit O of the revocation petition), required compliance with Section 8(2).

18. The learned counsel for the applicant submitted that the Respondent vide letter dated January 20, 2005 stated that

"… we would refer to the discussion… had with the Learned Controller General of Patent and Design………….. Pursuant thereto, it has been settled that the applicant will be required to submit the "prosecution" details of any one of the major Patent Offices. Accordingly, we'll submit copies of documents pertaining to the processing of one of the corresponding applications filed in a country outside India, as and when those will be available to the applicant".

However, no such information was provided to the Patent Office.

19. The learned counsel for the applicant submitted that no information on the prosecution of EPO and US counterpart applications was furnished .According to the counsel corresponding US application No. 10/153,043 which was being prosecuted by the respondent and response to the office actions in US were filed before the response to FER in India. Furthermore, as early as September 22, 2003, there was a "restriction and/or Election requirement". Therefore the statement of the applicant in its response to FER is clearly false.Similalarly barely a month after the response to FER in which the applicant stated that processing details outside India will be provided as and when available, the EPO issued its own Examination report February 11, 2005 in respect of the corresponding application (Page 388-385; Exhibit EA3 to the MP).This information was also not furnishedby the respondent. Therefore this amounted to gross violation of Section 8(2).

We are not looking at this moment why it was not given.But the fact remained that there was non compliance of Section 8. We have indicated the principles behind the S.8 objection, how it should be raised, defended and decided. The Act says failure to disclose the information required by S.8 is a ground for revocation. It does not qualify it by saying that the failure must be deliberate nor are there any words to indicate that the failure must be in regard to material particulars. In the present case the gound of the violation of section 8 has been clearly made out and we have no hesitation say applicant succeed on this ground of revocation.

Relevant excerpts from the IPAB order corresponding to Patent No. 219504:

12. According to the applicant, the respondent has failed to disclose to the controller the information required by Section 8 of the Act, in particular, the European counterpart of the subject Patent which was refused vide decision dated 11.12.2007. This is marked as Exhibit E. According to the applicant, the respondent had not tendered the following details:-

73. We have held the importance of compliance of section 8, the fact that there are search engines from which information can be culled out is no answer. The respondent had given a solemn undertaking to furnish the particulars from time to time in Form-3. Without this Form-3 statement, his application will not be examined. Having given an undertaking which is a pre-requisite was consideration of the application, he cannot avoid the solemn obligation by stating that the information is available in the internet or the website. In the counter statement, there is absolutely no explanation regarding the compliance or non compliance or difficult in compliance provisions. And inexplicably the respondent has accosted the applicant for filing the particulars belatedly. It is the respondent’s duty and it has been breached.

105. For the above reasons ORA/21/2011/PT/KOL is allowed and patent No.219504 is revoked.

Conclusion:

Despite the fact that the claimed subject matter has overcome the hurdles of novelty and inventive step, a patent could be revoked if Section 8 is violated. It is fairly easy to comply with Section 8, and non-compliance would result in competition gaining a very effective tool to weaken your patent portfolio. While violation of Section 8 remains a ground for revocation, one would still wonder why it should be a ground for revocation, since this section was introduced only to help the patent office to reduce the burden involved in examination. In our opinion, consequences of violating Section 8 should not be as harsh as revocation, and the Act should be amended to that effect. Further, the Indian Patent Office should enforce Section 8 strictly before granting a patent, so that worthy inventions are not revoked using Section 8.

Like patents, utility model is an exclusive right granted to an invention. This allows the grantee, the right to prevent others from commercially using the protected invention, without the grantee’s authorization, for a limited period of time. It is very similar to patents and are often referred to as, “petty patents” or “innovation patents”.

Though on the outset, both patents and utility model appear similar, there are many differences between the two, which are given below:

As compared to patents, the requirements of obtaining a utility model differ. To obtain patent protection, patents are required to satisfy both novelty and non-obviousness requirements of patentability among other requirements. Utility models are supposed to satisfy the novelty requirement and the non-obviousness requirement for utility model is low or absent.

The term of protection for utility model is usually between 7 to 10 years, based on the jurisdiction.

In most jurisdictions offering utility model protection, the applications are not examined prior to registration. This significantly reduces the duration required for registration.

As compared to patents, utility models are cheaper to obtain and maintain.

In some jurisdictions, utility model protection can only be obtained for certain fields of technology and only for products but not for processes.

Who should apply for utility model protection

Primarily, utility model protection may be sought under the following circumstances:

For inventions that do not reach the same level of inventiveness, which is required for patent protection.

For inventions that require faster registration.

For innovations which are of incremental nature and do not meet all the requirements of patentability.

When the life cycle of the invention is short and/or if, the profits are not able to cover patenting costs.

For minor improvements and adaptations of existing products.

The innovation is tangible and/or mechanical in nature.

Countries offering utility model protection

Many may identify themselves under the above mentioned criteria and feel that, their innovation warrants a utility model protection and not patents. But all countries do not offer utility model protection.

Though utility model protection would be of great help to many, India, at present does not offer protection under utility model. At present, technological innovations can only be protected in India under patents.

Several start-ups, smaller companies and family owned companies among others, have asked us whether they should apply for a patent in the name of their company or in the founder’s name. Well, even though there is no single correct answer, several factors can be considered, and a decision that suits the situation, can be taken. Some of the factors that can be considered while taking the decision are listed below:

1.Costs involved in the patenting process

2.Enforcement of the patent on potential infringers

3.Investor perspective

4.Protecting the inventor’s interest

Now let’s discuss each of the factors in a little more detail:

1.Costs involved in the patenting process

The table below provides an overview of some of the costs involved during the patenting process in India for different categories of applicants:

Sl. No.

Description

Patent office fee (INR) (e-filing)

Natural Person (individuals)/ Startups

Other than individuals

Small entity

Other than small entity

1

Application for grant of patent

1600

4000

8000

2

Early publication fee (Optional)

2500

6250

12500

3

Request for examination of patent application

4000

10000

20000

4

Extra pages – After 30 sheets

160/Sheet

400/Sheet

800/Sheet

5

Extra claims – After 10 claims

320/Claim

800/Claim

1600/Sheet

Further, it shall be noted that, once the patent is granted, yearly renewal fee has to be paid. Even the renewal fee is discounted if the applicant is a natural person/startup.

We have often observed that cost considerations often drive founders of early stage companies to file the patent applications in their name, as opposed to filing under the company’s name. However, with the introduction of a new type of applicant as Startup, startups can file as startups and avail discounted patent office fee, along with other benefits.

2.Enforcement of the patent on potential infringers

The primary objectives for obtaining a patent are to establish monopoly using the patented technology and gain monetary benefits from patent infringers. Both the objectives, if they were to be achieved, may require initiation of patent infringement suits. Hence, we will analyze some of the outcome of such suits from the perspective of patent being owned by individual(s) or company.

In the event of a patent infringement suit, if the court decides that the patent has been infringed, then relief will be provided to the patent owner. The relief can include, granting injunction, and EITHER damages or an account of profits. The relevant section of the Indian Patent Act is reproduced below:

108(1) The reliefs which a court may grant in any suit for infringement include an injunction (subject to such terms, if any, as the court thinks fit) and, at the option of the plaintiff, either damages or an account of profits.

If the patent owner prefers “damages” instead of “account of profits”, then it is preferable to have the patent owned by the company, as damages can be relatively easily calculated and the size of the damages can also be substantially large, as compared to a scenario wherein the patent is owned by individuals.

On the other hand, patent owner may prefer “account of profits”, if the infringer is a large company. In this scenario, whether the patent owner should ideally be individuals or a company, may be of little relevance in the context of this discussion.

The dilemma of patent ownership generally occurs when the startup has a potential to grow rapidly and foresees potential infringement of patent.

It shall be noted that, patent is just like any other property. Hence, even if one applies for a patent in the name of individuals, it can be assigned or licensed to the company at a later stage.

3.Investor perspective

If you are going to have your company funded, then the investors would like to have the patent assigned to the company. Even if you have applied for patent in the name of individuals, the investors would insist on transferring the patent application to the company.

Our opinion from the investor perspective is very clear. At the time of investment, the investor would like to have the Intellectual Property assigned to the company.

4.Protecting inventor’s and company's interest

There can be a scenario wherein one of the founders is an inventor. In such a scenario, the inventor would like to apply for a patent in his name, as it gives him immense control over the technology, thereby also giving control over commercial aspects of the company. On the other hand, the company would ideally like have the patent application assigned to them, thereby preventing a situation wherein, the inventor is in a position to dictate terms.

In addition to this, please note that, any invention which has been conceived by an employee during the course of his work for the company and relates to his field of work in the company, may always belong to the company, in light of the employment agreement that might be in place.

We hope that, this article will help you in deciding the applicant of your patent application.

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It has been a common misconception that, a patent application is queued for examination after it is filed at the Indian Patent Office (IPO). In India, filing a patent application does not essentially mean that an Applicant for the patent is requesting the IPO to examine his patent application. In fact, the Applicant can refrain from filing a request for examining his application up to 48 months from the filing date of the Indian patent application. It shall be noted that, if the Indian patent application is claiming priority from a corresponding patent application filed in a convention country or a PCT application, then the 48 month duration is calculated from the priority date of the Indian patent application.

In light of the above discussion, it is certain that, unless a request for examination is filed, the patent application will not be queued for examination. Having said that, by no means are we saying that just because an examination request has been filed, the patent application will be queued for examination. A second criterion has to be satisfied as well for the application to be queued for examination, and the second criterion is publication of the patent application. The patent application is published after 18 months from the date of filing the Indian patent application, unless an early publication request is filed. In case an early publication request is filed, then the patent application is normally published within 1 month from the date of filing such a request.

We can summarize the above content by mentioning that, a patent application will be queued for examination after both the below listed criteria are satisfied:

A request for examination of the patent application has been made

The patent application has been published

In case the Indian patent application is a national phase application, than the Indian patent application will be queued for examination after all the three below listed criteria are satisfied:

A request for examination of the patent application has been made

The patent application has been published

31 months has passed from the priority date of the Indian patent application, unless “express” request for examination is filed

The Indian patent office has introduced a expedited examination of patent applications, which is applicable if certain criteria is met. You can read more about this in our article.

The above mentioned are the criteria for the patent application to be queued for examination. Once queued, it can take a considerable amount of time, at least 2 years, to receive an examination report from the IPO. The current lot of patent applications, as per the year it was queued for examination, which are being issued examination reports, can be found here

In order to expedite the patenting process in India, it is advisable to satisfy the above listed criteria as soon as possible.

I hope you found this article useful. If you have any queries, feel free to write to us at contact@invntree.com

Once an Indian patent is granted for your invention, it has to be maintained subsequent to the grant. Maintaining a patent includes the task of paying patent renewal fee each year. Failure to pay the renewal fee will result in the patent ceasing to have effect.

The patent renewal fee in India is collected from the 3rd year onwards. Once the patent is granted, the pending renewal fee calculated from the 3rd year has to be paid. Further, the renewal fee for the subsequent years shall be paid before the expiration of the previous year of the patent. For example, renewal fee for the 8th year shall be paid before the expiration of the 7th year of the patent. The renewal fee details are provided below:

Renewal fee – Year

Patent Owner – Natural Person

Patent Owner – Other than natural person

Small Entity

Other than small entity

3 to 6

800

2000

4000

7 to 10

2400

6000

12000

11 to 15

4800

12000

24000

16 to 20

8000

20000

40000

As mentioned earlier, failure to pay the renewal fee will result in the patent ceasing to have effect. At a time when the patent ceases to have effect, the patent owner will not be able to enforce the patent. Further, even if the patent is restored, one cannot be held liable for infringement during the period in which the patent had ceased to have effect.

If a patent has ceased to have effect as a result of failure to pay the renewal fee within the prescribed time, i.e. before the expiration of the previous year, then the patent owner can request an extension of time to pay the renewal fee. The extended period is not more than 6 months from the date on which the patent ceased to have effect. The Indian Patent Office (IPO) fee for such an extension is INR 480/1200/2400 per month if the patent owner is a natural person or a small entity or other than small entity respectively.

In case a patent has ceased to have effect, it is advisable to reinstate it within the above stated 6 months. However, if the patent owner fails to reinstate the patent in this extended period of six months, then the patent owner can take an alternative approach to reinstate the patent. This alternative approach to reinstate is available till 18 months from the date the patent ceased to have effect. In the instant approach, the patent owner will have to mention, in detail, the circumstances which led to the failure to pay the fee, and the IPO may require further evidence. This approach however, is relatively difficult, time consuming and expensive.

In short, we can summarize this article by stating that a patent that has ceased to have effect can be restored by either paying the renewal fee within 6 months from the date on which the patent ceased to have effect, using a first approach, or by paying the renewal fee within 18 months from the date on which the patent ceased to have effect, using a second, more difficult and expensive, approach.

We hope you found this article useful.

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We come across several individuals who publish their work, and thereafter explore the option of patenting. Hence, we have penned down our thoughts on effects of publication on patenting.

Even before we delve into the topic, we would like to state the fact that, patent laws are jurisdiction specific, and varies from one country to another. The law in the US gives an inventor a period of 12 months from the date of such publication to apply for a patent. However, the law governing the patent system in India is significantly different.

In India, when the patent office examines a patent application, it tries to determine whether the subject matter intended to be protected in the patent application is anticipated or not. To determine anticipation, publications in India or elsewhere, which exist before the date of filing of the Indian patent application, are considered. In a scenario wherein the inventor himself has made a publication before filing the patent application, will still be considered as “prior art”. The inventors own publication would result in anticipation of the subject matter sought to be patented by his patent application, and a patent will be rejected.

Hence, it is advisable to apply for a patent before considering publication elsewhere, especially if you wish to seek patent protection in India and European countries.